Zihan Wang v Dale Cleaves Music Pty Ltd

[2022] ATMO 128

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Zihan Wang to registration of trade mark application number 2040386 (classes 15 & 35) – Australian Piano Warehouse (figurative) – in the name of Dale Cleves Music Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Self represented

Applicant: Joel Materson of By George Legal

Decision:

2022 ATMO 128

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 41 and 44 considered- evidence under s 41(4) sufficient- trade mark to proceed to registration

Background

1.    This is a decision on the opposition by Zihan Wang (‘Opponent’) to registration of trade mark number 2040386 (‘Application’) filed on 27 September 2019 (‘Relevant Date’) by Dale Cleaves Music Pty Ltd (‘Applicant’) for:

Trade Mark:     (‘Trade Mark’)

Specification: Class 15: Musical instruments; music stands and stands for musical instruments; accessories for musical instruments; pianos; digital pianos; keyboards; piano accessories

Class 35:  Retail and wholesale services; retail and wholesale services relating to musical instruments and their accessories including pianos, digital pianos, piano accessories, keyboards; on-line retailing by electronic means of musical instruments and their accessories including pianos, digital pianos, piano accessories, keyboards

(‘Applicant’s Goods and Services’)

2.    The Application was examined as required by s 31[1] and accepted with the following endorsement “Evidence and/or other circumstances provided under s 41(4)”. Acceptance of the Trade Mark was advertised on 4 June 2020. The Opponent filed a Notice of Intention to Oppose on 3 August 2020 and a Statement of Grounds and Particulars (‘SGP’) on 3 September 2020. The Applicant filed a Notice of Intention to Defend the Application from opposition on 2 December 2020.

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3.    The parties then had the opportunity to file evidence in accordance with reg 5.14.  The Opponent did not file any evidence.  The Applicant’s Evidence in Answer (‘EIA’) was lodged on 11 June 2021 and consisted of a declaration of Michael Dale Cleves, Director of the Applicant, made on 1 May 2020[2] with Annexures MDC-1 to MDC-46.[3] 

[2] The Applicant refiled the same declaration lodged in response to the first examination report.

[3] Annexures MDC-3, MDC-5, MDC-6, MDC-12, MDC-22 and MDC-26 are confidential.

4.    Once the time allowed for filing evidence ended, the parties were given the opportunity to request a hearing.  The Applicant requested an oral hearing and the Opponent asked to be heard by way of written submissions.    This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks and I heard this matter via video conference on 22 July 2022.  The Opponent filed its written submissions on 8 July 2022 (‘Opponent’s Submissions’).  The Applicant filed a written summary of its submissions on 15 July 2022 and at the hearing, Joel Materson, Director of the Opponent’s Attorneys, made oral submissions (collectively the ‘Applicant’s Submissions’).  I have formed my decision based on the particulars in the SGP, EIA and submissions of both parties.[4]

[4] Except the Opponent’s submissions on s 62A as outlined in [5].

Grounds and Onus

5. The SGP nominates grounds of opposition under ss 41 and 44. The Opponent’s Submissions include arguments relating to s 62A but this ground has not been claimed in the SGP and accordingly, I have not considered the submissions on this ground.

6.    The Opponent bears the burden of establishing a ground of opposition on the balance of probabilities.[5]  The rights of the parties are to be assessed at the Relevant Date. [6]

Discussion

Section 41

[5] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[6] Apple Inc v Registrar of Trade Marks [2014] FCA 1304 [59]; (2014) 227 FCR 511.

1. Section 33 of the Act requires that the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. That is, ‘a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists’.[7]  The  Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [8] and the wording of s 41 post the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) make it clear that the presumption of registrability applies to s 41.

   [7] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [146]. As also confirmed by the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 146.

   [8] Page 146.

2. Section 41 relevantly provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:          For goods of a person and services of a person see section 6.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   (iii)  any other circumstances.
   
   

3. The inherent adaptation of a trade mark to distinguish a trader’s goods or services is to be assessed:

   [B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[9]

   [9] Clark Equipment Co. v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

4. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[10] indicated that the test for distinctiveness under s 41 of the Act is a two-step process. First, the ordinary signification of the trade mark in Australia, to persons who will purchase, consume or trade in the goods, must be discerned.[11]  Once the ordinary signification is established, consideration must then be given to whether other traders might legitimately desire to use the trade mark for the sake of its ordinary signification in respect of the same or similar goods.

   [10] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).

   [11] Ibid [71].

5. In the SGP and Opponent’s Submissions, the Opponent claims that the Trade Mark has no inherent adaptation to distinguish the Applicant’s Goods and Services because each of the elements ‘Australian’, ‘Piano’ and ‘Warehouse’ is non-distinctive.  The Opponent claims that other businesses use different combinations of two of these elements in their business names but this claim is not supported by any documentary evidence and it is not surprising that other traders use combinations such as ‘Australian Piano’ with another word/s.

6. In my view, it is not contentious that the ordinary signification of the Trade Mark is a large scale outlet in Australia that predominantly sells and/or manufactures pianos.  Whilst a retail outlet for musical instruments may not strictly fall within the dictionary definition of the term ‘WAREHOUSE’, I am aware that this term is used in relation to large sized stores, particularly those which offer discount pricing.  In my opinion, other traders are likely to wish to use the term AUSTRALIAN PIANO WAREHOUSE for its ordinary signification in relation to the sorts of goods and services claimed in the Application.

7. The Applicant accepts that the Trade Mark is not sufficiently inherently adapted to distinguish to prima facie qualify for registration but argues that the Trade Mark is to some extent inherently distinctive.  The Opponent refers to the Trade Mark as a plain word mark in the Opponent’s Submissions but the Applicant correctly points out that this is not the case.  In particular, the word ‘piano’ in the Trade Mark contains a stylised ‘p’ which the Applicant submits is the shape of a grand piano from a bird’s eye view of the mark. 

8. In deciding the inherent distinctiveness of a trade mark, the mark should be considered as a whole rather than determining whether the individual elements comprising the mark are separately registrable.[12]  The presence of one or more descriptive elements is not determinative of the registrability of the combination. 

   [12] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380 (Lawrence J).

9. Although the stylization of the Trade Mark is fairly minimal, it is sufficient to add a modicum of inherent adaptation to distinguish and I must now assess whether the Trade Mark does or will distinguish the Applicant’s Goods and Services taking into account the presumption of registrability and the Applicant’s use of the Trade Mark.

10. In 2013, the Applicant registered the business name ‘Australian Piano Warehouse’ and since that time, the Applicant has continuously used the trade marks AUSTRALIAN PIANO WAREHOUSE, the logo mark (‘Logo Mark’) and the Trade Mark (collectively the word mark, Logo Mark and Trade Mark are referred to as the ‘APW Marks’) in connection with its business of selling new and used pianos, digital pianos, keyboards and accessories.  Invoices from 2013 showing use of the Trade Mark are included in the evidence.

11. The Applicant is Australia’s largest piano retailer with a number of stores trading under the APW Marks in Brisbane, Melbourne, Adelaide and Sydney.  The Applicant generates substantial annual revenue under the APW Marks. It has extensively advertised its products under the APW Marks, including on its website at since 2013, social media since 2013, on the Internet including the Applicant’s Gumtree account and third party websites, and on delivery trucks, television, in newspaper advertisements and by direct marketing.  The Applicant also sponsors various organisations and events such as the Sydney Music School’s Master Piano Institute and concerts at Sydney Conservatorium of Music and Queensland Performing Arts Centre. A summary of the Applicant’s annual advertising expenditure, which has increased each year from 1 July 2017-31 December 2019, has been provided.  The Applicant has received positive customer reviews on Google and Facebook for its business operated under the APW Marks.

12. The Applicant is also the owner of Australian trade mark registration number 1647008 for the Logo Mark in class 35 for the retail and wholesale of musical instruments and their accessories.

13. I am satisfied that the Applicant has established use of the APW Marks, including the Trade Mark, on an extensive scale for 6 years prior to the Relevant Date for the Services claimed in the Application and that consumers looking to buy a piano or keyboard would have probably encountered and be familiar with the Applicant and the Trade Mark.  Use of the other APW Marks by the Applicant would reinforce this familiarity.

14. It appears from the evidence that the Applicant does not manufacture pianos or otherwise use the Trade Mark for the Applicant’s Goods.  However, I am aware that manufacturers of pianos, keyboards and other musical instruments, such as Yamaha, sell their products directly to the public either online or through retail stores.  The Applicant’s Goods and Services are closely related and I am satisfied that the use of the Trade Mark for the Applicant’s Goods would, as a result of the Applicant’s use of the APW Marks for the Applicant’s Services, clearly suggest to the general public that such goods are associated with the Applicant.

15. I am satisfied that the Applicant has used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact or will distinguish the Applicant’s Goods and Services by indicating a connection in the course of trade with the Applicant.  Accordingly, the s 41 ground of opposition is unsuccessful.

    Section 44

16. To successfully oppose the Application pursuant to s 44, the Opponent must establish that a trade mark registered by a person other than the Applicant:

    • has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
    • is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and
    • is in respect of goods and/or services which are similar or closely related to the Applicant’s Goods and Services (‘the third requirement’).

17. In the SGP, the Opponent relies on its Australian trade mark number 1983105 filed on 14 January 2019 for:

    Trade Mark:           (‘Opponent’s Mark’)

    Specification:       Class 15: Musical instruments; music stands and stands for musical instruments; accessories for musical instruments; pianos; digital pianos; keyboards; piano accessories

    (Applicant’s Goods’)

18. The Opponent’s Mark is in the name of a person other than the Applicant and has an earlier priority date than the Application.  Hence, the first requirement is satisfied and I turn now to a consideration of whether the Opponent’s Mark is substantially identical with, or deceptively similar to, the Trade Mark.

    Substantially Identical

19. The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (‘Shell’) as follows:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[13]

    [13] [1963] HCA 66; (1963) 109 CLR 407, 415.

20. The comparison in the present case is between the following marks:

1. On a side by side comparison of the two marks, it is apparent that there is not a total impression of similarity.  The only common element is the descriptive words ‘Australian Piano’.  The marks otherwise contain different elements and are distinguishable in their appearance.  The Opponent’s Mark is not substantially identical to the Trade Mark.

   Deceptive Similarity

2. Section 10 provides:

   10  Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. The assessment of deceptive similarity was considered by Windeyer J in Shell who observed:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[14]

   [14] Ibid [13].

4. The Opponent refers to an earlier decision of Dale Cleves Music Pty Ltd v Allans Musical Instruments Pty Ltd[15] (‘First Decision’) which essentially involved the same parties as the present case in that Mr Wang (the Opponent) is the owner of Allans Musical Instruments Pty Ltd.[16]  The Opponent contends that in the First Decision, the Applicant agreed and the Delegate held, that the Trade Mark presently at issue is deceptively similar to the Opponent’s Mark.  The First Decision concerned different marks to those presently being considered.  The Applicant alleges that it did not previously concede that the Trade Mark is deceptively similar to the Opponent’s Mark and the reference in the First Decision relied on by the Opponent in support of this contention is not contained in the First Decision.  In fact, in the First Decision, the Delegate held that the two marks shown below are not deceptively similar.

[15] [2022] ATMO 51.

[16] Applicant’s Submissions.

1. In this case, the only similarity between the marks is use of the descriptive and non-distinctive words “Australian Piano”.  The Opponent cannot claim a monopoly in the term ‘Australian Piano’ for goods and services relating to pianos provided in Australia.  Where a common element is descriptive or commonly used in the trade, its presence must be discounted to some extent in considering whether the marks are deceptively similar.[17]  As Justice Stephen noted in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd:

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[18]  

   [17] Cooper Engineering Pty Limited v Sigmund Pumps Limited [1952] HCA 15.

   [18] [1978] HCA 11; 140 CLR 216, 229.

2. When considering the two marks as a whole, it is clear that the presentation of the word elements in each mark is different and the Opponent’s Mark contains a distinctive device element.  I am satisfied that given these differences, the Opponent’s Mark is not deceptively similar to the Trade Mark.

1. The s 44 ground is not established.

   Decision

2. Section 55 of the Act provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.
   
   

3. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2040386 may proceed to registration one month from the date of this decision.

4. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued. The disposition of the application should otherwise be in accordance with the Court’s order or direction.

5. The Applicant has requested an award of costs and hence I award costs against the Opponent under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   1 August 2022